OPPOSITION No B 3 051 644

CAD Schroer GmbH, Fritz-Peters-Str. 11, 47447 Moers, Germany (opponent), represented by König Szynka Tilmann von Renesse, Patentanwälte Partnerschaft MbB, Mönchenwerther Straße 11, 40545 Düsseldorf, Germany (professional representative).

a g a i n s t

IPS S.p.A., Via Monticello 7, 04011 Aprilia, Italy (applicant).

On 12/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 644 is upheld for all the contested services.

2. European Union trade mark application No 17 671 611 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 671 611 namely against all the services in Class 42. The opposition is based on, inter alia, Swedish trade mark registration No 193 967 “MEDUSA” (word mark). The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Swedish trade mark registration No 193 967.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 09: Computers, and accessories therefor, such as computer equipment, memories and software in the form of optical or magnetic carriers or perforated cards and strips, as well as associated stands, tables and the like.

Class 16: Paper, card, tape and tape for data usage.

Class 35: Development of data services / programs to assist in managing business.

Class 37: Installation, service and assembly in the data area.

Class 42: Development and Provision of Engineering Technical Services / Programs.

The contested services are the following:

Class 42: Testing, authentication and quality control; Design services; Product development consultation; Consultancy in the field of technological design; Creating and maintaining web sites for others; Creating and designing website-based indexes of information for others [information technology services]; Design of computer databases; Design of computer cluster configurations; Design of information systems; Database design and development; Design and development of multimedia products; Product design and development; Design and development of networks; Design and development of electronic data security systems; Scientific and technological design; Computer design research; Design services relating to computer hardware and to computer programmes; Design services relating to data processing tools; Design services relating to data processors; Design services relating to the development of computerised information processing systems; Scientific technological services; Providing scientific research information and results from an online searchable database; Providing on-line information in the field of technological research from a computer database or the Internet; Consultancy services in the field of technological development; Technological consultancy; IT services; Rental of computer hardware and facilities; Leasing of data processing systems; Provision of computing facilities; Rental of computer hardware; Rental of a database server (to third parties); Rental of web servers; Rental of computer software, data processing equipment and computer peripheral devices; Leasing computer facilities; Rental of data carriers; Rental services relating to data processing equipment and computers; Data security services; IT consultancy, advisory and information services; Computer security consultancy; Conducting feasibility studies relating to computer information systems; Conducting feasibility studies relating to computer hardware; Advice and consultancy in relation to computer networking applications; Consultancy in the field of computers; Computer and information technology consultancy services; Advice relating to the development of computer systems; Computer hardware and software consultancy; Consultancy relating to the updating of software; Consultancy in the field of computer system analysis; Consultancy in the field of computer system integration; Consultancy relating to software for communication systems; Information services relating to the development of computer systems; Provision of technical support in the supervision of computing networks; Provision of technical support in the operation of computing networks; Expert consultancy services in connection with computing equipment; Consultancy and information services relating to software maintenance; Consultancy and information services relating to computer programming; Consultancy and information services relating to information technology architecture and infrastructure; Consultancy and information services relating to computer system integration; Consultancy and information services relating to computer software design; Consultancy and information services relating to the design, programming and maintenance of computer software; Consultancy and information services relating to information technology; Advisory services relating to computer systems analysis; Information technology [IT] consultancy; Consultancy services relating to computer networks; Information services relating to the development of computer networks; Technical services for the downloading of digital data; Compression of data for electronic storage; Digital compression of computer data; Cross-platform conversion of digital content into other forms of digital content; Conversion of computer programs and data, other than physical conversion; Decoding of data; Data encryption and decoding services; Data encryption services; Online data storage; Electronic storage of digital images; Electronic storage of documents; Electronic storage of digital audio files; Electronic storage of files and documents; Electronic storage of digital video files; Electronic storage of digital photographs; Electronic storage of digital music; Cloud computing; Electronic data back-up; Electronic data storage; Configuration of computer networks by software; Consulting in the field of cloud computing networks and applications; Hosting of databases; Fog computing; Providing temporary use of on-line non-downloadable software for the management of information; Providing temporary use of on-line non-downloadable software for the transmission of data; Providing temporary use of online non-downloadable software for word processing; Providing virtual computer environments through cloud computing; Providing search engines for obtaining data via communications networks; Providing search engines for obtaining data on a global computer network; Providing virtual computer systems through cloud computing; Providing online non-downloadable software for word processing; Providing online non-downloadable software for use in communication; Providing temporary use of non-downloadable software for analyzing financial data and generating reports; Providing temporary use of non-downloadable software to enable sharing of multimedia content and comments among users; Providing temporary use of non-downloadable software to enable content providers to track multimedia content; Providing on-line non-downloadable software for database management; Data warehousing; Infrastructure as a Service [IaaS]; Rental of computer programs; Rental of data processing programs; Rental of application software; Rental of computer software and programs; Rental of operating software for accessing and using a cloud computing network; Rental of operating software for computer networks and servers; Rental of computer database software; Rental of software for data processing; Rental of database management software; Leasing of computer software for reading a data stream; Rental of software for importing and managing data; Platform as a Service [PaaS]; Electronic storage services for archiving databases; Electronic storage services for archiving electronic data; Electronic storage services for archiving databases, images and other electronic data; Data back-up services; Consulting services in the field of software as a service [SaaS]; Application service provider [ASP], namely, hosting computer software applications of others; Software as a service [SaaS]; Electronic data storage and data back-up services; Computer services concerning electronic data storage; IT security, protection and restoration; Advice relating to the design of computer hardware; Design and development of computer hardware architecture; Customized design of computer hardware; Consultancy in the design and development of computer hardware; Software development, programming and implementation; Hiring of computer firmware; Updating of computer programs; Updating of computer programs for third parties; Updating of computer software; Updating of computer software for others; Updating of software for data processing; Updating of computer software relating to computer security and prevention of computer risks; Updating of software for communication systems; Updating and maintenance of computer software and programs; Updating and upgrading of computer software; Updating and adapting of computer programs according to user requirements; Configuration of computer firmware; Conducting feasibility studies relating to computer software; Configuration of computer systems and networks; Configuration of computer software; Consultancy in the field of software design; Consultancy relating to the design and development of computer programs; Consultancy relating to the design and development of computer database programs; Consultancy relating to software design and development; Consultancy relating to the design and development of computer software programs; Consultancy relating to computer database programs; Creating programmes for data processing; Creating of computer programs; Software creation; Creation of computer programmes for data processing; Computer software design; Software design for others; Design and writing of computer software; Software design and development; Installation of firmware; Installation of database software; Installation and actualisation of programs for data processing; Installation, repair and maintenance of computer software; Installation, maintenance and repair of software for computer systems; Installation, maintenance, updating and upgrading of computer software; Installation, maintenance, repair and servicing of computer software; Maintenance of data bases; Maintenance of computer programs; Maintenance and upgrading of computer software; Designing of data processing programmes; Design of computer database software; Design of software for data and multimedia content conversion from and to different protocols; Design and development of computer database programs; Design, maintenance and up-dating of computer software; Design, development and programming of computer software; Design, maintenance, development and updating of computer software; Programming of EDP software; Writing of programs for data processing; Writing of computer programs; Advice and development services relating to computer software; Development of data bases; Development of computer firmware; Development of data programs; Upgrading of computer software; Development and maintenance of computer database software; Development and testing of software; Computer rental and updating of computer software; Server administration; Remote server administration; Creation of computing platforms for third parties; Data mining; Computer project management in the field of EDP; Maintenance of data processing software; Rental and maintenance of computer software; Design and development of systems for data input, output, processing, display and storage; Design and development of data storage systems; Design and development of data processing systems; Design and development of data entry systems; Design and development of data display systems; Design and development of electronic database software; Research relating to data processing; Research in the field of information technology; Research in the field of data processing technology; Development of systems for the processing of data; Development of computer systems; Development of systems for the storage of data; Development of systems for the transmission of data.

An interpretation of the wording of the list goods and services is required to determine the scope of protection of these goods and services.

The term ‘such as’, used in the opponent’s list of goods and services, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested services in Class 42

The contested Product development consultation, Design and development of multimedia products, Design services, Product design and development are similar to the opponent`s Computers. Computers are goods which can also be used as multimedia products. Producers of computers might also offer services to develop and design such goods. Therefore the relevant public, the distribution channels and the producers/providers of the goods and services coincide.

The contested Testing, authentication and quality control are similar to the opponent`s software. On the market exist special Software for testing, authentication and quality control (e.g. Authentication Software). Therefore the goods and services can have a similar purpose, they are directed at the same public and will be distributed through the same sale channels. Companies who offer this special Software might also offer the related Services.

Infrastructure as a service (IaaS) is a form of cloud computing that provides virtualized computing resources over the internet. IaaS is one of the three main categories of cloud computing services, alongside software as a service (SaaS) and platform as a service (PaaS). (see: https://searchcloudcomputing.techtarget.com/definition/Infrastructure-as-a-Service-IaaS) Therefore the contested Infrastructure as a Service [IaaS], Platform as a Service [PaaS], Software as a service [SaaS] are similar to the opponent`s software because software is essential to provide cloud computing. Therefore the goods and services can have a similar purpose, they are directed at the same public and will be distributed through the same sale channels.

The contested Scientific and technological design; Scientific technological services; Providing scientific research information and results from an online searchable database; Providing on-line information in the field of technological research from a computer database or the Internet; Consultancy services in the field of technological development; Technological consultancy are all scientific and technological services which are similar to the opponent`s technical services, namely Development and Provision of Engineering Technical Services / Programs. These services are of similar nature and purpose and are directed at the same public. Consumers can assume that the provider of the applicant`s scientific and technological services will also provide technical Services and programs.

The contested IT services are similar to the earlier computers and software. IT-Services consist e.g. in developing or repairing computers and software. Therefor the producers of such goods might also provide IT-Services. These goods and services are directed at the same public and will be distributed through the same sale channels.

The remaining contested services all relate to updating-, configurating-, installing-, maintaining-, designing-, developing, consulting-, storing- and designing in the area of Computersoft- and -hardware goods.

The opponent’s goods cover products belonging to the same sector of Computersoft- and -hardware. Even if it cannot be excluded that some of the contested goods and services would coincide in numerous relevant criteria such as their nature, purpose, method of use, their complementarity, whether they are competing goods and services, these goods and services clearly belong to one homogeneous sector of products and services on the market and for the majority of them they are - at least – produced/provided by the same companies, target the same end user and are being sold through the same channels of distribution. Based on this conclusion, none of the contested goods and services can be considered dissimilar.

It follows, therefore, that all the remaining contested services are at least similar to a low degree to the opponent’s goods.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high because some of the goods and services are highly specialised and only infrequently purchased.

3. The signs

MEDUSA
Earlier trade mark	Contested sign

The relevant territory is Sweden.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The applicant argues that the opponent is using his mark in different forms which diverge from the registered form. The assessment of similarity of signs however must be based exclusively on the trademarks` specifics and description as registered while the specific way in which the marks are used on the market does not matter (European Court of justice, 02/09/2010, C-254/09 P “Calvin Klein”; General Court 24/10/17, T-202/16 “Coffee Inn/coffee in”).

The word “Medusa” of the signs has no meaning for the relevant public. Medusa is translated into English (e.g. from Spanish) as “jellyfish”. The Swedish word for this is “manet” (see https://en.bab.la/dictionary/english-swedish/jellyfish).

The term “Medusa” is distinctive.

The figurative element of the contested sign might be recognised as picture of a jellyfish. Since it has no meaning for any of the goods and services in question it is distinctive.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the word “MEDUSA”. However, they differ in the additional figurative element of the contested sign.

Therefore, the signs are at least similar to an average degree.

Aurally, the pronunciation of the signs coincides in their only word “Medusa”.

Therefore, the signs are identical.

Conceptually, although the public in the relevant territory might perceive the meaning of the figurative element of the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods and services in question were found to be at least lowly similar and the signs are visually similar and aurally identical. Due to this and the absence of any dominant or non‑distinctive elements in the signs, a likelihood of confusion exists.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Swedish trade mark registration No 193 967. It follows that the contested trade mark must be rejected for all the contested services.

As the earlier right, namely Swedish trade mark registration No 193 967 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Ewelina SLIWINSKA

Reiner SARAPOGLU

Volker MENSING

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.